The Complainant is Incipio Technologies, Inc. of California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America (the “United States”).
The Respondent is Starfield Services Ltd. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom (“BVI”), represented by Mark Patzelt, Austria.
The disputed domain name <incipio.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 4, 2011, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On March 4, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Response was filed with the Center on March 28, 2011.
The Center appointed John Swinson as the sole panelist in this matter on April 11, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 12, 2011 the Respondent requested a list identifying the materials sent to the Panel and on April 14, 2011 the Center provided the list to the Respondent.
On April 15, 2011 the Respondent requested to submit further supporting information and the Center responded on the same day confirming receipt. On April 18, 2011 the Respondent was granted permission to submit further supporting information by no later than April 25, 2011 and the Complaint was invited to Respond by May 2, 2011. The timing for the decision was extended by 14 days.
The Complainant confirmed receipt of this communication on April 18, 2011. The Respondent confirmed receipt and requested further time to submit materials due to the Easter holidays on April 19, 2011. This request was denied by the Panel on April 20, 2011.
The Respondent submitted a Supplementary Filing on April 21, 2011. The Complainant did not submit any further information.
The Complainant is Incipio Technologies, Inc., a Californian corporation that operates a mobile device accessories company. The Complainant is the owner of a United States Federal Trademark Registration for the INCIPIO mark (Number 3,638,230) registered on June 16, 2009, however a stylized version of the INCIPIO mark was first registered by the President and CEO of the Complainant (with a filing date in 1999).
The Respondent is Starfield Services Ltd. Little information is known about this entity.
The disputed domain name was registered in the Respondent’s name on May 22, 2007. It appears that the disputed domain name was initially registered on May 18, 2002, and acquired by the Respondent in 2007.
The Complainant makes the following submissions:
The Complainant operates a mobile device accessories company. The Complainant owns all rights in the INCIPIO mark. The Complainant and its affiliates have used the INCIPIO mark continuously in commerce since at least as early as November 29, 1999. In addition, the Complainant is the owner of a United States Federal Trademark Registration for the INCIPIO mark. The Complainant has its headquarters in the United States and offices in Hong Kong, SAR of China and London and is recognized as a global leader in the mobile device accessories industry. Specifically, the Complainant designs and manufactures accessories, carrying solutions, cables and chargers for the mobile device industry’s best-known brands. The Complainant’s products are well-known in the United States and internationally with its products being available online and in stores globally. Further, the Complainant operates numerous websites incorporating the term “incipio” through which the Complainant promotes its products under the INCIPIO mark and has had an online presence since at least 2000. The Complainant has also partnered with wide-reaching distributors and retailers in the United States, Canada, Asia, Europe, Australia, Africa and Latin America.
The Complainant also offers a broad range of other electronics accessory products and other accessories to its customers, and each of these products has been sold under the INCIPIO mark since at least as early as November 29, 1999. The Complainant has also engaged in various promotional campaigns and partnerships that have helped expand its line of products and increase consumer awareness and goodwill.
Prior to the registration and use of the disputed domain name by the Respondent, and by virtue of the extensive marketing conducted by the Complainant, the INCIPIO mark has become recognized by individuals in the United States and throughout the world as designating the Complainant as the source of the goods so marked. As such, these trademarks are extremely valuable to the Complainant.
The Complainant has owned two Untied States trademark registrations incorporating the INCIPIO mark. On December 27, 1999 the President and CEO of the Complainant filed an application for the INCIPIO mark in stylized form with it being registered on June 4, 2002. In 2000, the President and CEO assigned all of his worldwide rights, title and interest in and to the INCIPIO mark, including the application, to the Complainant. The Complainant filed a second application on September 8, 2008 for the INCIPIO mark in standard characters, with registration occurring on June 16, 2009 on the United State Trade Mark Register. The prior stylized trademark registration was cancelled in favor of the later standard INCIPIO mark on March 7, 2009. The Complainant has continuously used the INCIPIO mark since the mark was first adopted in 1999.
The Complainant has rights in the INCIPIO mark as is evidenced by registration and use of the mark since prior to the Respondent’s registration of the disputed domain name. The Complainant has registered and common law trade mark rights. The Complainant’s common law trade mark rights arise from continues use since November 29, 1999.
The disputed domain name is identical to the Complainant’s INCIPIO mark. It is appropriate to disregard the addition of the “.com” generic top-level domain (see Royal Crown Company, Inc. v. New York Broadcast Services, Inc., WIPO Case No. D2000-0315).
The Respondent has no rights or legitimate interests in the disputed domain name. A respondent using a domain name to provide sponsored links and to market goods that directly compete with a complainant is not using a domain name in connection with a bona fide offering of goods and services (see Pioneer Hi-Bred Int’l Inc. v. Cahn, NAF Claim No. 154119). The primary content of the website to which the disputed domain name resolved from at least February 2005 through to May 2007 was a directory of sponsored listings, some of which linked to competitors of the Complainant. The sponsored links allowed the Respondent to financially benefit from its use of the Complainant’s INCIPIO mark by attracting Internet users to the Respondent’s website by creating confusion in the mind of the Internet user as to the relationship between the Respondent’s website and the Complainant and its marks. Consumers searching for the Complainant’s products were misleading diverted to the Respondent’s website on which links to websites of the Complainant’s competitors were displayed as well as other unrelated sites. Further, the Respondent displayed the INCIPIO mark on the website the disputed domain name resolved to endorse sponsored links. This likely caused the Complainant to lose sales and suffer reputation damage. Therefore, the Respondent did not use the disputed domain name in connection with the bona fide offering of goods during this time.
Also, passively holding a domain name for several years, as is the case here, is evidence that a respondent is not making preparations to use the domain name in connection with an offering of goods or services (see Melbourne IT Ltd. v. Stafford, WIPO Case No. D2000-1167). The disputed domain name does not currently resolve to any operating website and there is no evidence the Respondent has made any preparations to use the domain name in connection with a bona fide offering of goods or services.
Further:
the Respondent has never been an agent of the Complainant, nor is there any contractual relationship between the Complainant and Respondent;
the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks for any purpose;
the Respondent is not commonly known by the disputed domain name and nor has it acquired any trademark rights in the disputed domain name;
the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue (see Tercent Inc. v. Yi, NAF Claim No. 139720; Ziegenfelder Co. v. VMH Enter., Inc., WIPO Case No. D2000-0039). This is because the Respondent has used the disputed domain name to provide sponsored links to competitors’ websites and the Respondent is not currently using the disputed domain name for any purpose.
Therefore, the Complainant submits that the Respondent adopted the disputed domain name in order to associate itself with the Complainant and profit from it strong reputation.
Finally, The Respondent registered the disputed domain name in bad faith as:
the disputed domain name has been offered for sale in excess of out-of-pocket expenses. The Complainant believes the Respondent transferred the disputed domain name to a new account in order to whitewash prior use;
the Respondent registered and used the disputed domain name in bad faith by using the disputed domain name to provide sponsored links to competing businesses and even though this use predates the Respondent’s registration date, the Complainant believes the entity controlling the domain name registration has not changed since registration. The use of the sponsored links creates a false association between the products and services offered via the sponsored links and the Complainant. This disrupts the Complainant’s business as it creates reputation risk and causes potential loss of customers;
the Respondent has intentionally attempted to attract consumers for financial gain (via sponsored links) to the disputed domain name by creating a likelihood of confusion with the Complainant and its marks as to the source and affiliation of the disputed domain name. The similarity between the Complainant’s marks and the disputed domain name and the fact that the Respondent has offered links to similar and competing products contributes to this confusion and indicates that the disputed domain name can only have been registered for this reason; and
other circumstances that indicate bad faith on the part of the Respondent include:
the fact that the disputed domain name has not been employed for a legitimate use;
passive holding of the disputed domain name in conjunction with the Respondent’s other actions;
the Respondent had actual or constructive notice of the Complainant’s mark;
the Respondent has provided misleading information to the Whois database; and
the Complainant’s marks are so inherently distinctive that any use of the mark would likely create confusion in the minds of consumers.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent makes the following submissions:
The Respondent engaged legal representatives to acquire the disputed domain name from the previous owner. The Respondent purchased the disputed domain name for 4,500 Euro in 2007 after several months of negotiation beginning in March.
The Respondent desired to purchase the disputed domain name in order to present an invention filed with WIPO via the Internet. The name “Incipio” was chosen by the developer of the technology because of the associated meaning of this Latin word, that is, “to start” or “to initiate”, with the invention.
In 2007 the website resolving from the disputed domain name was developed and published.
The developer of the technology died in 2008 and the invention became part of his inheritance and later part of the liquidation of his property.
With the death of the developer, the website was taken down and remained dormant.
The invention has continued to be advanced and once the liquidation process is complete the intention is to utilize the disputed domain name once again.
Therefore, the Respondent is not willing to transfer the disputed domain name as it is legally registered.
The Respondent made further submissions and submitted:
Part of the assets of the developer’s estate listed for liquidation were the patent applications in various stages and about one year ago the Respondent offered to purchase all patent applications.
The offer has now been accepted and will be presented to the board of creditors.
There is nothing to indicate that the patent application has been abandoned and the Respondent will proceed with the application as soon as it is in the Respondent’s possession.
Once the transfer is complete (one to two months) the Respondent will immediately reactivate the website resolving from the disputed domain name as the Respondent has allocated extensive resources to developing the technology.
The Respondent legally purchased the disputed domain name in 2007 and the Complainant claims to have been operating since 1999. As such, why did the Complainant not previously purchase the disputed domain name while it was on the open market? Further, why would the Complainant register various other domain names and why have they only complained now?
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
The Respondent filed supplementary material. There is no obligation on the Panel to consider this information and it is at the Panel’s discretion as to whether it wishes to consider these filings. The Panel finds that the information contained in the Supplemental Filing adds little to the Respondent’s case, however the Panel has considered the material in order to properly assess the merits of this case.
Further, the Complainant has delayed in bringing these proceedings. Although, delay in filing proceedings under the UDRP does not of itself prevent a complainant from succeeding, delay does make a case on the merits more difficult to establish in relation to the second and third elements (see Board of Trustees of the University of Arkansas v. FanMail.com, WIPO Case No. D2009-1139). Here, the Panel does not find that delay is a determinative factor, but notes that it has indeed made it more difficult for the Complainant to establish the second and third elements. Further, the Complainant does not explain why it took so long to bring these proceedings, or indeed, why it did not register the disputed domain name in 1999 when it commenced business. However, lack of such information, although possibly helpful, does not impact the ultimate outcome of this dispute.
The Complainant owns a United States registered trademark in relation to the term “INCIPIO”.
Further, the Complainant has put forward extensive evidence to suggest that it has common law rights in the term “incipio” since at least 2000. In order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trade mark, nature and extent of advertising and media recognition. The Panel finds that the Complainant does have common law trade mark rights in the term, given its extensive and comprehensive use of the term over a lengthy period of time and advertising and promotional campaigns outlined at 5A.
For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The disputed domain name contains the mark INCIPIO. The Panel finds the inclusion of the suffix “.com” does nothing to alleviate the similarity or potential for confusion in the minds of Internet users. The operative and dominant feature of the disputed domain name is “incipio” and this is identical to the Complainant’s marks.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and common law trademarks and as such, paragraph 4(a)(i) of the Policy is satisfied.
Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has proffered extensive evidence of the use of the disputed domain name for monetization, prior to it being transferred to the Respondent and argued that this indicates an absence of rights or legitimate interests on the part of the Respondent. The Complainant asserts that the ownership of the disputed domain name has not altered since initial registration despite changes to registration details on the WhoIs database, and as such this use can be attributed to the Respondent. However, the Complainant has not provided any substantive evidence in support of this. Therefore, the Panel only refers to the use to which the disputed domain name was put from May 22, 2007, being the date the Respondent appears to have acquired the disputed domain name.
The Complainant’s delay has made it difficult for it to establish a prima facie case in relation to this element as only limited evidence is now available. Therefore, even if the Respondent itself did use the disputed domain name for monetization, for example, there is no evidence of this and as such the Panel does not proceed on this basis.
In any event, as discussed below, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has not submitted sufficient evidence to rebut this.
Specifically, since May 2007 it appears that the disputed domain name has not resolved to any operating website. In the circumstances here, passive holding of a domain name for four years is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Moreover, the Respondent has not been known as disputed domain name and has no trademark rights in relation to it.
The Respondent has made submissions that the disputed domain name was acquired in order to present an invention via the Internet. The Respondent states that the invention was developed, and related patent owned, by a person named Mr. Brinnich. However, the Respondent has not submitted any evidence as to the relationship between the Respondent and the inventor of the invention and has merely made assertions that the invention was named “Incipio” without providing any support for this. Further, the Respondent has submitted that a website was developed and established in 2007 and was later taken down in 2008, however, again, the Panel was not provided with any evidence of this.
Therefore, in the absence of any evidence in support of the Respondent’s case and assertions, it cannot be found that the Respondent used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, namely the invention, or that the Respondent has an rights in the disputed domain name as a name. As such, the Complainant succeeds on this element.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. However, the Panel notes that these circumstances are not exhaustive.
Again, much of the Complainant’s argument focuses on use that occurred prior to the disputed domain name being transferred to the Respondent. As stated above, the Panel cannot find that such prior use can be imputed to Respondent in the absence of any evidence.
However, the Panel still makes a finding of bad faith on the part of the Respondent.
The Panel finds that the Complainant’s trade marks are sufficiently well known that the Respondent, most likely, acquired and registered the disputed domain name with knowledge of the trademarks and Complainant’s reputation. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 where the panel stated that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307).
Even though the Respondent has not actively used the disputed domain name, the Panel is not excluded from making a finding of bad faith. As stated in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, “[i]t has long been generally held…that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy”. (See also, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the case of passive use, a panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith and may draw inferences about whether the domain name was used in bad faith in light of the surrounding circumstances. Relevant circumstances include, whether the Complainant has a well-known trademark and concealment of the Respondent’s identity, in conjunction with passive holding. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Further, the Panel in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 went so far as to state, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. (See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
The Respondent presented no plausible reason why the Respondent did not use the disputed domain name for four years.
Here, as set out at 5A and discussed at 6B, the Complainant’s marks are well-known and the Complainant has a strong reputation. The Panel thus finds that the Respondent would most likely have been aware of the existence of the Complainant’s marks in 2007. Therefore, when considering this, in conjunction with the fact that the Respondent has been passively holding the disputed domain name and has not submitted any evidence suggesting that the disputed domain name was selected for a legitimate use or purpose (refer to 6C), an inference of bad faith registration and use is made by the Panel.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <incipio.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: May 10, 2011